Appeal No. 2004-1040 Page 13
Application No. 09/770,643
Subsequent references (GenBank NM_130773 and AB077881) by others
do teach proteins which are 99% identical to that of the claimed invention.
These proteins are named “Caspr” proteins and are members of the
neurexin superfamily. . . . While it is known, as Applicants disclose in the
specification, that the superfamily of neurexins mediate neuronal processes,
the specific neur[on]al processes of the proteins and genes of the present
invention have not been disclosed. . . . Therefore, one of ordinary skill in
the art would not know how to use a protein, or a gene, which is only known
to generally be involved in neuronal processes, along with potentially
hundreds or thousands of proteins.
Appellants argue that the claimed nucleic acids encode a protein that would be
accepted as a caspr by those skilled in the art, because
two sequences sharing nearly 100% percent identity at the protein level
over the entire length of the claimed sequence are present in the leading
scientific repository for biological sequence data (GenBank), and have
been annotated by third party scientists wholly unaffiliated with Appellants
as “Homo sapiens caspr5 protein.” . . . Given these GenBank
annotations, there can be no question that those skilled in the art would
clearly believe that Appellants’ sequence is a caspr protein.
Appeal Brief, pages 4-5. Appellants cite sequence comparison data that purportedly
show that “caspr proteins are distinct members of the neurexin superfamily,” id., page 5,
and conclude that, “[a]s the Examiner admits that casprs have a specific utility, due to
their association with ‘myelinated axons and potassium channels’ (the Final Action at
page 3), the claimed sequence clearly meets the requirements of 35 U.S.C. § 101.” Id.,
page 6.
We do not agree that the characterization of the claimed nucleic acids as
encoding a contactin-associated protein (caspr) is sufficient to establish their utility. The
specification admits that “[n]eurexins have been associated with, inter alia, mediating
neural processes, seizures, signaling, exocytosis, cancer, and development. Neurexins
can also serve as receptors for latrotoxins.” Page 1. The specification does not
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